Lanham Act as amended by the Trademark Law Revision Act of 1988

[EDITOR'S NOTE: TEXT ITALICS ADDED 1988;

OVERSTRUCK TEXT REMOVED 1988]

§ 1051. Registration; application; payment of fees; designation of resident for service of process and notice

(a) The owner of a trade--mark used in commerce may apply to register his or her ~~may register his~~ trade--mark under this chapter on the principal register established:

(1)~~(a)~~ By ﬁling in the Patent and Trademark Ofﬁce--

(A)~~(1)~~ a written application, in such form as may be prescribed by the Commissioner, veriﬁed by the applicant, or by a member of the ﬁrm or an ofﬁcer of the corporation or association applying, specifying applicant's domicile and citizenship, the date of applicant's ﬁrst use of the mark, the date of applicant's ﬁrst use of the mark in commerce, the goods in connection with which the mark is used and the mode or manner in which the mark is used in connection with such goods, and including a statement to the effect that the person making the veriﬁcation believes himself, or the ﬁrm, corporation, or association in whose behalf he makes the veriﬁcation, to be the owner of the mark sought to be registered, that the mark is in use in commerce, and that no other person, ﬁrm, corporation, or association, to the best of his knowledge and belief, has the right to use such mark in commerce either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with ~~applied to~~ the goods of such other person, to cause confusion, or to cause mistake, or to deceive: Provided, That in the case of every application claiming concurrent use the applicant shall state exceptions to his claim of exclusive use, in which he shall specify, to the extent of his knowledge, any concurrent use by others, the goods on or in connection ~~goods in connection~~ with which and the areas in which each concurrent use exists, the periods of each use, and the goods and area for which the applicant desires registration;

(B)~~(2)~~ a drawing of the mark; and

(C)~~(3)~~ such number of specimens or facsimiles of the mark as used as may be required by the Commissioner.

(2)~~(b)~~ By paying into the Patent and Trademark Ofﬁce the prescribed ~~ﬁling~~ fee.

(3)~~(c)~~ By complying with such rules or regulations, not inconsistent with law, as may be prescribed by the Commissioner.

(b) A person who has a bona ﬁde intention, under circumstances showing the good faith of such person, to use a trademark in commerce may apply to register the trademark under this Act on the principal register hereby established:

(1) By ﬁling in the Patent and Trademark Ofﬁce--

(A) a written application, in such form as may be prescribed by the Commissioner, veriﬁed by the applicant, or by a member of the ﬁrm or an ofﬁcer of the corporation or association applying, specifying applicant's domicile and citizenship, applicant's bona ﬁde intention to use the mark in commerce, the goods on or in connection with which the applicant has a bona ﬁde intention to use the mark and the mode or manner in which the mark is intended to be used on or in connection with such goods, including a statement to the effect that the person making the veriﬁcation believes himself or herself, or the ﬁrm, corporation, or association in whose behalf he or she makes the veriﬁcation, to be entitled to use the mark in commerce, and that no other person, ﬁrm, corporation, or association, to the best of his or her knowledge and belief, has the right to use such mark in commerce either in the identical form of the mark or in such near resemblance to the mark as to be likely, when used on or in connection with the goods of such other person, to cause confusion, or to cause mistake, or to deceive, however, except for applications ﬁled pursuant to section 44, no mark shall be registered until the applicant has met the requirements of subsection (d) of this section; and

(B) a drawing of the mark.

(2) By paying in the Patent and Trademark Ofﬁce the prescribed fee.

(3) By complying with such rules or regulations, not inconsistent with law, as may be prescribed by the Commissioner.

(c) At any time during examination of an application ﬁled under subsection (b), an applicant who has made use of the mark in commerce may claim the beneﬁts of such use for purposes of this Act, by amending his or her application to bring it into conformity with the requirements of subsection (a).

(d)(1) Within six months after the date on which the notice of allowance with respect to a mark is issued under section 13(b)(2) to an applicant under subsection (b) of this section, the applicant shall ﬁle in the Patent and Trademark Ofﬁce, together with such number of specimens or facsimiles of the mark as used in commerce as may be required by the Commissioner and payment of the prescribed fee, a veriﬁed statement that the mark is in use in commerce and specifying the date of the applicant's ﬁrst use of the mark in commerce, those goods or services speciﬁed in the notice of allowance on or in connection with which the mark is used in commerce, and the mode or manner in which the mark is used on or in connection with such goods or services. Subject to examination and acceptance of the statement of use, the mark shall be registered in the Patent and Trademark Ofﬁce, a certiﬁcate of registration shall be issued for those goods or services recited in the statement of use for which the mark is entitled to registration, and notice of registration shall be published in the Ofﬁcial Gazette of the Patent and Trademark Ofﬁce. Such examination may include an examination of the factors set forth in subsections (a) through (e) of section 2. The notice of registration shall specify the goods or services for which the mark is registered.

(2) The Commission shall extend, for one additional 6--month period, the time for ﬁling the statement of use under paragraph (1), upon written request of the applicant before the expiration of the 6--month period provided in paragraph (1). In addition to an extension under the preceding sentence, the Commissioner may, upon a showing of good cause by the applicant, further extend the time for ﬁling the statement of use under paragraph (1) for periods aggregating not more than 24 months, pursuant to written request of the applicant made before the expiration of the last extension granted under this paragraph. Any request for an extension under this paragraph shall be accompanied by a veriﬁed statement that the applicant has a continued bona ﬁde intention to use the mark in commerce and specifying those goods or services identiﬁed in the notice of allowance on or in connection with which the applicant has a continued bona ﬁde intention to use the mark in commerce. Any request for an extension under this paragraph shall be accompanied by payment of the prescribed fee. The Commissioner shall issue regulations setting forth guidelines for determining what constitutes good cause for purposes of this paragraph.

(3) The Commissioner shall notify any applicant who ﬁles a statement of use of the acceptance or refusal thereof and, if the statement of use is refused, the reasons for the refusal. An applicant may amend the statement of use.

(4) The failure to timely ﬁle a veriﬁed statement of use under this subsection shall result in abandonment of the application.

(e)~~(d)~~ If the applicant is not domiciled in the United States he shall designate by a written document ﬁled in the Patent and Trademark Ofﬁce the name and address of some person resident in the United States on whom may be served notices or process in proceedings affecting the mark. Such notices or process may be served upon the person so designated by leaving with him or mailing to him a copy thereof at the address speciﬁed in the last designation so ﬁled. If the person so designated cannot be found at the address given in the last designation, such notice or process may be served upon the Commissioner.

[Sec. 2]

§ 1052. Trade--marks registrable on principal register; concurrent registration

[EDITOR'S NOTE: TEXT ITALICS ADDED 1988; OVERSTRUCK TEXT REMOVED 1988]

No trade--mark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it--

(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.

(b) Consists of or comprises the ﬂag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.

(c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.

(d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Ofﬁce, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive: Provided, That if the Commissioner determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to (1) the earliest of the ﬁling dates of the applications pending or of any registration issued under this Act; (2) July 5, 1947, in the case of registrations previously issued under the Act of March 3, 1881, or February 20, 1905, and continuing in full force and effect on that date; or (3) July 5, 1947, in the case of applications ﬁled under the Act of February 20, 1905, and registered after July 5, 1947. Use prior to the ﬁling date of any pending application or a registration shall not be required when the owner of such application or registration consents to the grant of a concurrent registration to the applicant. Concurrent registrations may also be issued by the Commissioner when a court of competent jurisdiction has ﬁnally determined that more than one person is entitled to use the same or similar marks in commerce. In issuing concurrent registrations, the Commissioner shall prescribe conditions and limitations as to the mode or place of use of the mark or the goods on or in connection with which such mark is registered to the respective persons.

(d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark ofﬁce or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when applied to the goods of the applicant, to cause confusion, or to cause mistake, or to device. Provided, That when the Commissioner determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods in connection with which such marks are used, concurrent registrations may be issued to such person when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to (i) the earliest of the ﬁling dates of the applications pending or of any registration issued under this Act; or (ii) July 5, 1947, in the case of registrations previously issued under the Act of March 3, 1881, or February 20, 1905, and continuing in full force and effect on that date, or (iii) July 5, 1947, in the case of applications ﬁled under the Act of February 20, 1905, and registered after July 5, 1947. Concurrent registrations may also be issued boy the Commissioner when a court of competent jurisdiction has ﬁnally determined that more than one person is entitled to use the same or similar marks in commerce. In issuing concurrent registrations, the Commissioner shall prescribe conditions and limitations as to the mode or place of use of the mark or the goods in connection which such mark is registered to the respective persons.

(e) Consists of a mark which, (1) when used on or in connection with ~~applied~~ the goods of the applicant is merely descriptive or deceptively misdescriptive of them, or (2) when used on or in connection with ~~applied to~~ the goods of the applicant is primarily geographically descriptive or deceptively misdescriptive of them, except as indications of regional origin may be registrable under section 1054 of this title, or (3) is primarily merely a surname.

(f) Except as expressly excluded in paragraphs (a), (b), (c), and (d) of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce. The Commissioner may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with ~~applied~~ the applicant's goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the ﬁve years before the date on which the claim of distinctiveness is made ~~ﬁve years next preceding the date of the ﬁling of the application for its registration.~~

§ 1057. Certiﬁcates of registration

(a) Certiﬁcates of registration of marks registered upon the principal register shall be issued in the name of the United States of America, under the seal of the Patent and Trademark Ofﬁce, and shall be signed by the Commissioner or have his signature placed thereon, and a record thereof shall be kept in the Patent and Trademark Ofﬁce. The registration shall reproduce the mark, and state that the mark is registered on the principal register under this chapter, the date of the ﬁrst use of the mark, the date of the ﬁrst use of the mark in commerce, the particular goods or services for which it is registered, the number and date of the registration, the term thereof, the date on which the application for registration was received in the Patent and Trademark Ofﬁce, and any conditions and limitations that may be imposed in the registration.

(b) A certiﬁcate of registration of a mark upon the principal register provided by this Act shall be prima facie evidence of the validity of the registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate, subject to any conditions or limitations stated in the certificate.

A certiﬁcate of registration of a mark upon the principal register provided by this Act shall be prima facie evidence of the validity of the registration, registrant's ownership of the mark, and of registrant's exclusive right to use the mark in commerce in connection with the goods of services speciﬁed in the certiﬁcate, subject to any conditions and limitations stated therein.

(c) Contingent on the registration of a mark on the principal register provided by this Act, the ﬁling of the application to register such mark shall constitute constructive use of the mark, conferring a right of priority, nationwide in effect, on or in connection with the goods or services speciﬁed in the registration against any other person except for a person whose mark has not been abandoned and who, prior to such ﬁling

(1) has used the mark;

(2) has ﬁled an application to register the mark which is pending or has resulted in registration of the mark; or

(3) has ﬁled a foreign application to register the mark on the basis of which he or she has acquired a right of priority, and timely ﬁles an application under section 44(d) to register the mark which is pending or has resulted in registration of the mark.

(d)~~(c)~~ A certiﬁcate of registration of a mark may be issued to the assignee of the applicant, but the assignment must ﬁrst be recorded in the Patent and Trademark Ofﬁce. In case of change of ownership the Commissioner shall, at the request of the owner and upon a proper showing and the payment of the prescribed fee ~~provided in this chapter,~~ issue to such assignee a new certiﬁcate of registration of the said mark in the name of such assignee, and for the unexpired part of the original period.

(e)~~(d)~~ Upon application of the registrant the Commissioner may permit any registration to be surrendered for cancellation, and upon cancellation appropriate entry shall be made in the re--cords of the Patent and Trademark Ofﬁce. Upon application of the registrant and payment of the prescribed fee, the Commissioner for good cause may permit any registration to be amended or to be disclaimed in part: Provided, That the amendment or disclaimer does not alter materially the character of the mark. Appropriate entry shall be made in the records of the Patent and Trademark Ofﬁce and upon the certiﬁcate of registration or, if said certiﬁcate is lost or destroyed, upon a certiﬁed copy thereof.

(f)~~(e)~~ Copies of any records, books, papers, or drawings belonging to the Patent and Trademark Ofﬁce relating to marks, and copies of registrations, when authenticated by the seal of the Patent and Trademark Ofﬁce and certiﬁed by the Commissioner, or in his name by an employee of the Ofﬁce duly designated by the Commissioner, shall be evidence in all cases wherein the originals would be evidence; and any person making application therefor and paying the prescribed fee ~~fee required by law~~ shall have such copies.

(g)~~(f)~~ Whenever a material mistake in a registration, incurred through the fault of the Patent and Trademark Ofﬁce, is clearly disclosed by the records of the Ofﬁce a certiﬁcate stating the fact and nature of such mistake, shall be issued without charge and recorded and a printed copy thereof shall be attached to each printed copy of the registration certiﬁcate and such corrected registration shall thereafter have the same effect as if the same had been originally issued in such corrected form, or in the discretion of the Commissioner a new certiﬁcate of registration may be issued without charge. All certiﬁcates of correction heretofore issued in accordance with the rules of the Patent and Trademark Ofﬁce and the registrations to which they are attached shall have the same force and effect as if such certiﬁcates and their issue had been speciﬁcally authorized by statute.

(h)~~(g)~~ Whenever a mistake has been made in a registration and a showing has been made that such mistake occurred in good faith through the fault of the applicant, the Commissioner is authorized to issue a certiﬁcate of correction or, in his discretion, a new certiﬁcate upon the payment of the prescribed fee ~~required fee:~~ Provided, That the correction does not involve such changes in the registration as to require republication of the mark.

§ 1064. Cancellation of registration

A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be ﬁled as follows by any person who believes that he is or will be damaged by the registration of a mark on the principal register established by this chapter, or under the Act of March 3, 1881, or the Act of February 20, 1905 ~~1905.~~

(1) Within ~~(a)within~~ ﬁve years from the date of the registration of the mark under this chapter.

(2) Within ~~(b)within~~ ﬁve years from the date of publication under section 1062(c) of this title of a mark registered under the Act of March 3, 1881, or the Act of February 20, 1905. ~~1905, or~~

(3) At any time if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered, or has been abandoned, or its registration was obtained fraudulently or contrary to the provisions of section 4 or of subsection (a), (b), or (c) of section 2 for a registration under this Act, or contrary to similar prohibitory provisions of such prior Acts for a registration under such Acts, or if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used. If the registered mark becomes the generic name for less than all of the goods or services for which it is registered, a petition to cancel the registration for only those goods or services may be ﬁled. A registered mark shall not be deemed to be the generic name of goods or services solely because such mark is also used as a name of or to identify a unique product or service. The primary signiﬁcance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used.

(c) at any time if the registered mark becomes the common descriptive name of an article or substance, or has been abandoned, or its registration was obtained fraudulently or contrary to the provisions of section 1054 of this title or of subsections (a), (b), or (c) of section 1052 of this title for a registration here--under, or contrary to similar prohibitory provisions of said prior Acts for a registration thereunder, of if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services in connection with which the mark is used. A registered mark shall not be deemed to be the common descriptive name of goods or services solely because such mark is also used as a name of or to identify a unique product or service. The primary signiﬁcance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the common descriptive name of goods or services in connection with which it has been used; or

(4) At ~~(d) at~~ any time if the mark is registered under the Act of March 3, 1881, or the Act of February 20, 1905, and has not been published under the provisions of subsection (c) of section 12 of this Act, of

(5) At ~~(e) at~~ any time in the case of a certiﬁcation mark on the ground that the registrant (A) ~~(1)~~ does not control, or is not able legitimately to exercise control over, the use of such mark, or (B)~~(2)~~ engages in the production or marketing of any goods or services to which the certiﬁcation mark is applied, or (C)~~(3)~~ permits the use of the certiﬁcation mark for purposes other than to certify, or (D)~~(4)~~ discriminately refuses to certify or to continue to certify the goods or services of any person who maintains the standards or conditions which such mark certiﬁes:

Provided, That the Federal Trade Commission may apply to cancel on the grounds specified in paragraphs (3) and (5) ~~subsections (c) and (e)~~ of this section any mark registered on the principal register established by this chapter, and the prescribed fee shall not be required.

§ 1065. Incontestability of right to use mark under certain conditions

Except on a ground for which application to cancel may be ﬁled at any time under paragraphs (3) and (5) ~~subsections (c) and (e)~~ of section 1064 of this title, and except to the extent, if any, to which the use of a mark registered on the principal register infringes a valid right acquired under the law of any State or Territory by use of a mark or trade name continuing from a date prior to the date of registration under this chapter of such registered mark, the right of the registrant to use such registered mark in commerce for the goods or services on or in connection with which such registered mark has been in continuous use for ﬁve consecutive years subsequent to the date of such registration and is still in use in commerce, shall be incontestable:

Provided, That--

(1) there has been no ﬁnal decision adverse to registrant's claim of ownership of such mark for such goods or services, or to registrant's right to register the same or to keep the same on the register; and

(2) there is no proceeding involving said rights pending in the Patent and Trademark Ofﬁce or in a court and not ﬁnally disposed of; and

(3) an afﬁdavit is ﬁled with the Commissioner within one year after the expiration of any such ﬁve--year period setting forth those goods or services stated in the registration on or in connection with which such mark has been in continuous use for such ﬁve consecutive years and is still in use in commerce, and other matters speciﬁed in subsections (1) and (2) ~~subsections (1) and (2)~~ of this section; and

(4) no incontestable right shall be acquired in a mark which is the generic name for the goods or services or a portion thereof, for which it is registered. ~~the common descriptive name of any article or substance, patented or otherwise.~~

Subject to the conditions above speciﬁed in this section, the incontestable right with reference to a mark registered under this chapter shall apply to a mark registered under the Act of March 3, 1881, or the Act of February 20, 1905, upon the ﬁling of the required afﬁdavit with the Commissioner within one year after the expiration of any period of ﬁve consecutive years after the date of publication of a mark under the provisions of subsection (c) of section 12 of this Act.

The Commissioner shall notify any registrant who ﬁles the above--prescribed afﬁdavit of the ﬁling thereof.

§ 1066. Interference; declaration by Commissioner

Upon petition showing extraordinary circumstances, the Commissioner may declare that an interference exists when application is made for the registration of a mark which so resembles a mark previously registered by another, or for the registration of which another has previously made application, as to be likely when used on or in connection with the goods or services ~~applied to the goods or when used in connection with the goods or services~~ of the applicant to cause confusion or mistake or to deceive. No interference shall be declared between an application and the registration of a mark the right to the use of which has become incontestable.

§ 1071. Appeal to courts

(a) (1) An applicant for registration of a mark, party to an interference proceeding, party to an opposition proceeding, party to an application to register as a lawful concurrent user, party to a cancellation proceeding, a registrant who has ﬁled an afﬁdavit as provided in section 8 of this title, or an applicant for renewal, who is dissatisﬁed with the decision of the Commissioner or Trademark Trial and Appeal Board, may appeal to the United States Court of Appeals for the Federal Circuit thereby waiving his right to proceed under subsection (b) of this section ~~section 21 (b) hereof:~~ Provided, That such appeal shall be dismissed if any adverse party to the proceeding, other than the Commissioner, shall, within twenty days after the appellant has ﬁled notice of appeal according to paragraph (2) of this subsection ~~subsection (a)(2) of this section,~~ ﬁles notice with the Commissioner that he elects to have all further proceedings conducted as provided in subsection (b) of this section. Thereupon the appellant shall have thirty days thereafter within which to ﬁle a civil action under subsection (b) of this section ~~said subsection (b) of this section,~~ in default of which the decision appealed from shall govern the further proceedings in the case.

(2) When an appeal is taken to the United States Court of Appeals for the Federal Circuit, the appellant shall ﬁle in the Patent and Trademark Ofﬁce a written notice of appeal directed to the Commissioner, within such time after the date of the decision from which the appeal is taken as the Commissioner prescribes, but in no case less than 60 days after that date.

(3) The Commissioner shall transmit to the United States Court of Appeals for the Federal Circuit a certiﬁed list of the documents comprising the record in the Patent and Trademark Ofﬁce. The court may request that the Commissioner forward the original or certiﬁed copies of such documents during pendency of the appeal. In an ex parte case, the Commissioner shall submit to that court a brief explaining the grounds for the decision of the Patent and Trademark Ofﬁce, addressing all the issues involved in the appeal. The court shall, before hearing an appeal, give notice of the time and place of the hearing to the Commissioner and the parties in the appeal.

(4) The United States Court of Appeals for the Federal Circuit shall review the decision from which the appeal is taken on the record before the Patent and Trademark Ofﬁce. Upon its determination the court shall issue its mandate and opinion to the Commissioner, which shall be entered of record in the Patent and Trademark Ofﬁce and shall govern the further proceedings in the case. However, no ﬁnal judgment shall be entered in favor of an applicant under section 1(b) before the mark is registered, if such applicant cannot prevail without establishing constructive use pursuant to section 7(c).

(b)

(1) Whenever a person authorized by subsection (a) of this section ~~section 21(a) a here of~~ to appeal to the United States Court of Appeals for the Federal Circuit is dissatisﬁed with the decision of the Commissioner or Trademark Trial and Appeal Board, said person may, unless appeal has been taken to said United States Court of Appeals for the Federal Circuit, have remedy by a civil action if commenced within such time after such decision, not less than sixty days, as the Commissioner appoints or as provided in subsection (a) of this section ~~section 21(a).~~ The court may adjudge that an applicant is entitled to a registration upon the application involved, that a registration involved should be canceled, or such other matter as the issues in the proceeding require, as the facts in the case may appear. Such adjudication shall authorize the Commissioner to take any necessary action, upon compliance with the requirements of law. However, no

(2) The Commissioner shall not be made a party to an inter partes proceeding under this subsection, but he shall be notiﬁed of the ﬁling of the complaint by the clerk of the court in which it is ﬁled and shall have the right to intervene in the action.

(3) In any case where there is no adverse party, a copy of the complaint shall be served on the Commissioner, and, unless the court ﬁnds the expense to be unreasonable, all the expenses of the proceeding shall be paid by the party bringing the case, whether the ﬁnal decision is in favor of such party or not. In all cases where there is no adverse party, a copy of the complaint shall be served on the Commissioner, and all the expenses of the proceedings shall be paid by the party bringing them, whether the ﬁnal decision is in his favor or not. In suits brought hereunder, the record in the Patent and Trademark Ofﬁce shall be admitted on motion of any party, upon such terms and conditions as to costs, ex--penses, and the further cross--examination of the witnesses as the court imposes, without prejudice to the right of any party to take further testimony. The testimony and exhibits of the record in the Patent and Trademark Ofﬁce, when admitted, shall have the same effect as if originally taken and produced in the suit.

(4) Where there is an adverse party, such suit may be instituted against the party in interest as shown by the records of the Patent and Trademark Ofﬁce at the time of the decision complained of, but any party in interest may become a party to the action. If there be adverse parties residing in a plurality of districts not embraced within the same State, or an adverse party residing in a foreign country, the United States District Court for the District of Columbia shall have jurisdiction and may issue summons against the adverse parties directed to the marshal of any district in which any adverse party resides. Summons against adverse parties residing in foreign countries may be served by publication or otherwise as the court directs.

§ 1114. Remedies; infringement; innocent infringement by printers and publishers

(1) Any person who shall, without the consent of the registrant--

(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or

(b) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive,

shall be liable in a civil action by the registrant for the remedies hereinafter provided. Under subsection (b) of this section, the registrant shall not be entitled to recover proﬁts or damages unless the acts have been committed with knowledge that such imitation is intended to be used to cause confusion, or to cause mistake, or to deceive.

(2) Notwithstanding any other provision of this Act, the remedies given to the owner of a right infringed under this Act or to a person bringing an action under section 43(a) shall be limited as follows:

(A) Where an infringer or violator is engaged solely in the business of printing the mark or violating matter for others and establishes that he or she was an innocent infringer or innocent violator, the owner of the right infringed or person bringing the action under section 43(a) shall be entitled as against such infringer or violator only to an injunction against future printing.

(B) Where the infringement or violation complained of is contained in or is part of paid advertising matter in a newspaper, magazine, or other similar periodical or in an electronic communication as deﬁned in section 2510(12) of title 18, United States Code, the remedies of the owner of the right infringed or person bringing the action under section 43(a) as against the publisher or distributor of such newspaper, magazine, or other similar periodical or electronic communication shall be limited to an injunction against the presentation of such advertising matter in future issues of such newspapers, magazines, or other similar periodicals or in future transmissions of such electronic communications.

The limitations of this subparagraph shall apply only to innocent infringers and innocent violators.

(C) Injunctive relief shall not be available to the owner of the right infringed or person bringing the action under section 43(a) with respect to an issue of a newspaper, magazine, or other similar periodical or an electronic communication containing infringing matter or violation matter where restraining the dissemination of such infringing matter or violating matter in any particular issue of such periodical or in an electronic communication would delay the delivery of such issue of transmission of such electronic communication after the regular time for such delivery or transmission, and such delay would be due to the method by which publication and distribution of such periodical or transmission of such electronic communication is customarily conducted in accordance with sound business practice, and not due to any method or device adopted to evade this section or to prevent or delay the issuance of an injunction or restraining order with respect to such infringing matter or violating matter.

(D) As used in this paragraph--

(i) the term ''violator'' means a person who violates section 43(a); and

(ii) the term ''violating matter'' means matter that is the subject of a violation under section 43(a).

(2) Notwithstanding any other provision of this chapter, the remedies given to the owner of the right infringed shall be limited as follows: (a) Where an infringer is engaged solely in the business of printing the mark for others and establishes that he was an innocent infringer the owner of the right infringed shall be entitled as against such infringer only to an injunction against future printing; (b) where the infringement complained of is contained in or is part of paid advertising matter in a newspaper, magazine, or other similar periodical the remedies of the owner of the right infringed as against the publisher or distributor of such newspapers, magazines, or other similar periodical: Provided, That these limitations shall apply only to innocent infringes; (c) injunction relief shall not be available to the owner of the right infringed in respect to an issue of a newspaper, magazine, or other similar periodical containing infringing matter when restraining the dissemination of such infringing matter in any particular issue of such periodical would delay the delivery of such issue after the regular time therefor, and such delay would be due to the method by which publication and distribution of such periodical is customarily conducted in accordance with sound business practice, and not to any method or device adopted for the evasion of this section or to prevent or delay the issuance of an injunction or restraining order with respect to such infringing matter.

§ 1115. Registration on principal register as evidence of exclusive right to use mark; defenses

(a) Any registration issued under the Act of March 3, 1881, or the Act of February 20, 1905, or of a mark registered on the principal register provided by this chapter and owned by a party to an action shall be admissible in evidence and shall be prima facie evidence of the validity of the registered mark and of the registration of the mark, of the registrant's ownership of the mark, and of the registrant's exclusive right to use the registered mark in commerce on or in connection with the goods or services speciﬁed in the registration subject to any conditions or limitations stated therein, but shall not preclude another person ~~ann opposing party~~ from proving any legal or equitable defense or defect, including those set forth in subsection (b), which might have been asserted if such mark had not been registered.

(b) To the extent that the right to use the registered mark has become incontestable under section 15, the registration shall be conclusive evidence of the validity of the registered mark and of the registration of the mark, of the registrant's ownership of the mark, and of the registrant's exclusive right to use the registered mark in commerce. Such conclusive evidence shall relate to the exclusive right to use the mark on or in connection with the goods or services speciﬁed in the afﬁdavit ﬁled under the provisions of section 15, or in the renewal application ﬁled under the provisions of section 9 if the goods or services speciﬁed in the renewal are fewer in number, subject to any conditions or limitations in the registration or in such afﬁdavit or renewal application. Such conclusive evidence of the right to use the registered mark shall be subject to proof of infringement as deﬁned in section 32, and shall be subject to the following defenses or defects:

If the right to use the registered mark has become incontestable under section 15 of this Act, the registration shall be conclusive evidence of the registrant's exclusive right to use the registered mark in commerce on or in connection with the goods or services speciﬁed in the afﬁdavit ﬁled under the provisions of said section 1065 subject to any conditions or limitations stated therein except when one of the following defenses or defects is established:

(1) That the registration or the incontestable right to use the mark was obtained fraudulently; or

(2) That the mark has been abandoned by the registrant; or

(3) That the registered mark is being used by or with the permission of the registrant or a person in privity with the registrant, so as to misrepresent the source of the goods or services on or in connection with which the mark is used; or

(4) That the use of the name, term, or device charged to be an infringement is a use, otherwise than as a ~~trade or service~~ mark, of the party's individual name in his own business, or of the individual name of anyone in privity with such party, or of a term or device which is descriptive of and used fairly and in good faith only to describe ~~to users~~the goods or services of such party, or their geographic origin; or

(5) That the mark whose use by a party is charged as an infringement was adopted without knowledge of the registrant's prior use and has been continuously used by such party or those in privity with him from a date prior to (A) the date of the constructive use of the mark established pursuant to section 7(c), (B) the registration of the mark under this Act if the application for registration is ﬁled before the effective date of the Trademark Law Revision Act of 1988, or (C) ~~registration of the mark under this chapter or~~ publication of the registered mark under subsection (c) of section 1062 of this title: Provided, however, That this defense or defect shall apply only for the area in which such continuous prior use is proved; or

(6) That the mark whose use is charged as an infringement was registered and used prior to the registration under this chapter or publication under subsection (c) of section 1062 of this title of the registered mark of the registrant, and not abandoned: Provided, however, That this defense or defect shall apply only for the area in which the mark was used prior to such registration or such publication of the registrant's mark; or

(7) That the mark has been or is being used to violate the antitrust laws of the United States; or

(8) That equitable principles, including laches, estoppel, and acquiescence, are applicable.

§ 1116. Injunctive Relief

(a) The several courts vested with jurisdiction of civil actions arising under this chapter shall have power to grant injunctions, according to the principles of equity and upon such terms as the court may deem reasonable, to prevent the violation of any right of the registrant of a mark registered in the Patent and Trademark Ofﬁce or to prevent a violation under section 43(a). Any such injunction may include a provision directing the defendant to ﬁle with the court and serve on the plaintiff within thirty days after the service on the defendant of such injunction, or such extended period as the court may direct, a report in writing under oath setting forth in detail the manner and form in which the defendant has complied with the injunction. Any such injunction granted upon hearing, after notice to the defendant, by any district court of the United States, may be served on the parties against whom such injunction is granted anywhere in the United States where they may be found, and shall be operative and may be enforced by proceedings to punish for contempt, or otherwise, by the court by which such injunction was granted, or by any other United States district court in whose jurisdiction the defendant may be found.

(b) The said courts shall have jurisdiction to enforce said injunction, as provided in this chapter, as fully as if the injunction had been granted by the district court in which it is sought to be enforced. The clerk of the court or judge granting the injunction shall, when required to do so by the court before which the application to enforce said injunction is made, transfer without delay to said court a certiﬁed copy of all papers on ﬁle in his ofﬁce upon which said injunction was granted.

(c) It shall be the duty of the clerks of such courts within one month after the ﬁling of any action, suit, or proceeding involving a mark registered ~~proceeding arising~~ under the provisions of this chapter to give notice thereof in writing to the Commissioner setting forth in order so far as known the names and addresses of the litigants and the designating number or numbers of the registration or registrations upon which the action, suit, or proceeding has been brought, and in the event any other registration be subsequently included in the action, suit, or proceeding by amendment, answer, or other pleading, the clerk shall give like notice thereof to the Commissioner, and within one month after the judgment is entered or an appeal is taken ~~decision is rendered, appeal taken or a decree issued~~ the clerk of the court shall give notice thereof to the Commissioner, and it shall be the duty of the Commissioner on receipt of such notice forthwith to endorse the same upon the ﬁle wrapper of the said registration or registrations and to incorporate the same as a part of the contents of such ﬁle wrapper.

(d)(1)(A) In the case of a civil action arising under section 1114(1)(a) of this title or section 380 of title 36 with respect to a violation that consists of using a counterfeit mark in connection with the sale, offering for sale, or distribution of goods or services, the court may, upon ex parte application, grant an order under subsection (a) of this section pursuant to this subsection providing for the seizure of goods and counterfeit marks involved in such violation and the means of making such marks, and records documenting the manufacture, sale, or receipt of things involved in such violation.

(B) As used in this subsection the term ''counterfeit mark'' means--

(i) a counterfeit of a mark that is registered on the principal register in the United States Patent and Trademark Ofﬁce for such goods or services sold, offered for sale, or distributed and that is in use, whether or not the person against whom relief is sought knew such mark was so registered; or

(ii) a spurious designation that is identical with, or substantially indistinguishable from, a designation as to which the remedies of this chapter are made available by reason of section 380 of title 36;

but such term does not include any mark or designation used on or in connection with goods or services of which the manufacturer or producer was, at the time of the manufacture or production in question authorized to use the mark or designation for the type of goods or services so manufactured or produced, by the holder of the right to use such mark or designation.

(2) The court shall not receive an application under this subsection unless the applicant has given such notice of the application as is reasonable under the circumstances to the United States attorney for the judicial district in which such order is sought. Such attorney may participate in the proceedings arising under such application if such proceedings may affect evidence of an offense against the United States. The court may deny such application if the court determines that the public interest in a potential prosecution so requires.

(3) The application for an order under this subsection shall--

(A) be based on an afﬁdavit or the veriﬁed complaint establishing facts sufﬁcient to support the ﬁndings of fact and conclusions of law required for such order; and

(B) contain the additional information required by paragraph (5) of this subsection to be set forth in such order.

(4) The court shall not grant such an application unless--

(A) the person obtaining an order under this subsection provides the security determined adequate by the court for the payment of such damages as any person may be entitled to recover as a result of a wrongful seizure or wrongful attempted seizure under this subsection; and

(B) the court ﬁnds that it clearly appears from speciﬁc facts that--

(i) an order other than an ex parte seizure order is not adequate to achieve the purposes of section 32 of this Act (15 U.S.C. 1114);

(ii) the applicant has not publicized the requested seizure;

(iii) the applicant is likely to succeed in showing that the person against whom seizure would be ordered used a counterfeit mark in connection with the sale, offering for sale, or distribution of goods or services;

(iv) an immediate and irreparable injury will occur if such seizure is not ordered;

(v) the matter to be seized will be located at the place identiﬁed in the application;

(vi) the harm to the applicant of denying the application outweighs the harm to the legitimate interests of the person against whom seizure would be ordered of granting the application; and

(vii) the person against whom seizure would be ordered, or persons acting in concert with such person, would destroy, move, hide, or otherwise make such matter inaccessible to the court, if the applicant were to proceed on notice to such person.

(5) An order under this subsection shall set forth--

(A) the ﬁndings of fact and conclusions of law required for the order;

(B) a particular description of the matter to be seized, and a description of each place at which such matter is to be seized;

(C) the time period, which shall end not later than seven days after the date on which such order is issued, during which the seizure is to be made;

(D) the amount of security required to be provided under this subsection; and

(E) a date for the hearing required under paragraph (10) of this subsection.

(6) The court shall take appropriate action to protect the person against whom an order under this subsection is directed from publicity, by or at the behest of the plaintiff, about such order and any seizure under such order.

(7) Any materials seized under this subsection shall be taken into the custody of the court. The court shall enter an appropriate protective order with respect to discovery by the applicant of any records that have been seized. The protective order shall provide for appropriate procedures to assure that conﬁdential information contained in such records is not improperly disclosed to the applicant.

(8) An order under this subsection, together with the supporting documents, shall be sealed until the person against whom the order is directed has an opportunity to contest such order, except that any person against whom such order is issued shall have access to such order and supporting documents after the seizure has been carried out.

(9) The court shall order that a United States marshal or other law enforcement ofﬁcer is to serve a copy of the order under this subsection and then is to carry out the seizure under such order. The court shall issue orders, when appropriate, to protect the defendant from undue damage from the disclosure of trade secrets or other conﬁdential information during the course of the seizure, including, when appropriate, orders restricting the access of the applicant (or any agent or employee of the applicant) to such secrets or information.

(10)(A) The court shall hold a hearing, unless waived by all the parties, on the date set by the court in the order of seizure. That date shall be not sooner than ten days after the order is issued and not later than ﬁfteen days after the order is issued, unless the applicant for the order shows good cause for another date or unless the party against whom such order is directed consents to another date for such hearing. At such hearing the party obtaining the order shall have the burden to prove that the facts supporting ﬁndings of fact and conclusions of law necessary to support such order are still in effect. If that party fails to meet that burden, the seizure order shall be dissolved or modiﬁed appropriately.

(B) In connection with a hearing under this paragraph, the court may make such orders modifying the time limits for discovery under the Rules of Civil Procedure as may be necessary to prevent the frustration of the purposes of such hearing.

(11) A person who suffers damage by reason of a wrongful seizure under this subsection has a cause of action against the applicant for the order under which such seizure was made, and shall be entitled to recover such relief as may be appropriate, including damages for lost proﬁts, cost of materials, loss of good will, and punitive damages in instances where the seizure was sought in bad faith, and, unless the court ﬁnds extenuating circumstances, to recover a reasonable attorney's fee. The court in its discretion may award prejudgment interest on relief recovered under this paragraph, at an annual interest rate established under section 6621 of title 26, commencing on the date of service of the claimant's pleading setting forth the claim under this paragraph and ending on the date such recovery is granted, or for such shorter time as the court deems appropriate.

§ 1124. Importation of goods bearing marks or names forbidden

Except as provided in subsection (d) of section 1526 of title 19, no article of imported merchandise which shall copy or simulate the name of the [sic.] any domestic manufacture, or manufacturer, or trader, or of any manufacturer or trader located in any foreign country which, by treaty, convention, or law affords similar privileges to citizens of the United States, or which shall copy or simulate a trademark registered in accordance with the provisions of this chapter or shall bear a name or mark calculated to induce the public to believe that the article is manufactured in the United States, or that it is manufactured in any foreign country or locality other than the country or locality in which it is in fact manufactured, shall be admitted to entry at any customhouse of the United States; and, in order to aid the ofﬁcers of the customs in enforcing this prohibition, any domestic manufacturer or trader, and any foreign manufacturer or trader, who is entitled under the provisions of a treaty, convention, declaration, or agreement between the United States and any foreign country to the advantages afforded by law to citizens of the United States in respect to trade--marks and commercial names, may require his name and residence, and the name of the locality in which his goods are manufactured, and a copy of the certiﬁcate of registration of his trademark, issued in accordance with the provisions of this chapter, to be recorded in books which shall be kept for this purpose in the Department of the Treasury, under such regulations as the Secretary of the Treasury shall prescribe, and may furnish to the Department facsimiles of his name, the name of the locality in which his goods are manufactured, or of his registered trade--mark, and thereupon the Secretary of the Treasury shall cause one or more copies of the same to be transmitted to each collector or other proper ofﬁcer of customs.

§ 1125. False designations of origin and false descriptions and dilution forbidden

(a) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which--

(1) is likely to cause confusion, or to cause mistake, or to deceive as to the afﬁliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or

(2) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities.

shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.

Any person who shall afﬁx, apply, or annex, or use in connection with any goods or services, or any container or containers for goods, a false designation, including words or other symbols tending falsely to describe or represent the same, and shall cause such goods or services to enter into commerce, and any person who shall with or representation cause or procure the same to be transported or used in commerce or deliver the same to any carrier to be transported or used, shall be liable to a civil action by any person doing business in the locality falsely indicated as that of origin or in the region in which said locality is situated, or by any person who believes that he is or is likely to be damaged by the used of any such false description or representation.

(b) Any goods marked or labeled in contravention of the provisions of this section shall not be imported into the United States or admitted to entry at any customhouse of the United States. The owner, importer, or consignee of goods refused entry at any customhouse under this section may have any recourse by protest or appeal that is given under the customs revenue laws or may have the remedy given by this chapter in cases involving goods refused entry or seized.

(c)(1) The owner of a famous mark shall be entitled, subject to the principles of equity and upon such terms as the court deems reasonable, to an injunction against another person's commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark, and to obtain such other relief as is provided in this subsection. In determining whether a mark is distinctive and famous, a court may consider factors such as, but not limited to--

(A) the degree of inherent or acquired distinctiveness of the mark;

(B) the duration and extent of use of the mark in connection with the goods or services with which the mark is used;

(D) the geographical extent of the trading area in which the mark is used;

(E) the channels of trade for the goods or services which the mark is used;

(F) the degree of recognition of the mark in the trading areas and channels of trade used by the marks' owner and the person against who the injunction is sought;

(G) the nature and extent of use of the same or similar marks by third parties; and

(H) whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.

(2) In an action brought under this subsection, the owner of the famous mark shall be entitled only to injunctive relief unless the person against whom the injunction is sought willfully intended to trade on the owner's reputation or to cause dilution of the famous mark. If such willful intent is proven, the owner of the famous mark shall also be entitled to the remedies set forth in sections 35(a) and 36, subject to the discretion of the court and the principles of equity.

(3) The ownership by a person of a valid registration under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register shall be a complete bar to an action against that person, with respect to that mark, that is brought by another person under the common law or a statute of a State and that seeks to prevent dilution of the distinctiveness of a mark, label, or form of advertisement.

(4) The following shall not be actionable under this section:

(A) Fair use of a famous mark by another person in comparative commercial advertising or promotion to identify the competing goods or services of the owner of the famous mark.

(B) Noncommercial use of a mark.

§ 1126. International conventions

(a) The Commissioner shall keep a register of all marks communicated to him by the international bureaus provided for by the conventions for the protection of industrial property, trade--marks, trade and commercial names, and the repression of unfair competition to which the United States is or may become a party, and upon the payment of the fees required by such conventions and the fees required by this Act ~~herein prescribed~~ may place the marks so communicated upon such register. This register shall show a facsimile of the mark or trade or commercial name; the name, citizenship, and address of the registrant; the number, date, and place of the ﬁrst registration of the mark, including the dates on which application for such registration was ﬁles and granted and the term of such registration; a list of goods or services to which the mark is applied as shown by the registration in the country of origin, and such other data as may be useful concerning the mark. This register shall be a continuation of the register provided in section 1(a) of the Act of March 19, 1920.

(b) Any person whose country of origin is a party to any convention or treaty relating to trade--marks, trade or commercial names, or repression or unfair competition, to which the United States is also a party, or extends reciprocal rights to nationals of the United States by law, shall be entitled to the beneﬁts of this section under the conditions expressed herein to the extent necessary to give effect to any provision of such convention, treaty or reciprocal law, in addition to the rights to which any owner of a mark is otherwise entitled by this Act.

(c) No registration of a mark in the United States by a person described in subsection (b) ~~paragraph (b)~~ of this section shall be granted until such mark has been registered in the country of origin of the applicant, unless the applicant alleges use in commerce.

For the purposes of this section, the country of origin of the applicant is the country in which he has a bona ﬁde and effective industrial or commercial establishment, or if he has not such an establishment the country in which he is domiciled, or if he has not a domicile in any of the countries described in subsection (b) ~~paragraph (b)~~ of this section, the country of which he is a national.

(d) An application for registration of a mark under section 1, 3, 4, 23 or 44(e) ~~section1, 2, 3, 4, or 23~~ of this Act, ﬁled by a person described in subsection(b) of this section who has previously duly ﬁled an application for registration of the same mark in one of the countries described in subsection (b) of this section shall be accorded the same force and effect as would be accorded to the same application if ﬁled in the United States on the same date on which the application was ﬁrst ﬁled in such foreign country: Provided, That--

(1) the application in the United States is ﬁled within six months from the date on which the application was ﬁrst ﬁled in the foreign country;

(2) the application conforms as nearly as practicable to the requirements of this Act, including a statement that the applicant has a bona ﬁde intention to use the mark in commerce; ~~but use in commerce need not be alleged,~~

(3) the rights acquired by third parties before the date of the ﬁling of the ﬁrst application in the foreign ~~foreign~~ country shall in no way be affected by a registration obtained on an application ﬁled under this subsection;

(4) nothing in this subsection shall entitle the owner of a registration granted under this section to sue for acts committed prior to the date on which his mark was registered in this country unless the registration is based on use in commerce.

In like manner and subject to the same conditions and requirements, the right provided in this section may be based upon a subsequent regularly ﬁled application in the same foreign country, instead of the ﬁrst ﬁled foreign application; Provided, That any foreign application ﬁled prior to such subsequent application has been withdrawn, abandoned, or otherwise disposed of, without having been laid open to public inspection and without leaving any rights outstanding, and has not served, nor thereafter shall serve, as a basis for claiming the right of priority.

(e) A mark duly registered in the country of origin of the foreign applicant may be registered on the principal register if eligible, otherwise on the supplemental register in this chapter provided. The application therefore shall be accompanied by a certiﬁcation or a certiﬁed copy of the registration in the country of origin of the applicant. The application must state the applicant's bona ﬁde intention to use the mark in commerce, but use in commerce shall not be required prior to registration.

(f) The registration of a mark under the provisions of subsections (c), (d), ~~paragraph (c), (d),~~ and (e) of this section by a person described in subsection (b) ~~paragraph~~ of this section shall be independent of the registration in the country of origin and the duration, validity, or transfer in the United States of such registration shall be governed by the provisions of this Act.

(g) Trade names or commercial names of persons described in subsection (b) ~~paragraph b~~ of this section shall be protected without the obligation of ﬁling or registration whether or not they form parts of marks.

(h) Any person designated in subsection (b) of this section as entitled to the beneﬁts and subject to the provisions of this chapter shall be entitled to effective protection against unfair competition, and the remedies provided in this chapter for infringement of marks shall be available so far as they may be appropriate in repressing acts of unfair competition.

(i) Citizens or residents of the United States shall have the same beneﬁts as are granted by this section to persons described in subsection (b) of this section ~~paragraph (b) hereof.~~

§ 1127. Construction and deﬁnitions; intent of chapter

In the construction of this chapter, unless the contrary is plainly apparent from the context--

The United States includes and embraces all territory which is under its jurisdiction and control.

The word ''commerce'' means all commerce which may lawfully be regulated by Congress.

The term ''principal register'' refers to the register provided for by sections 1 to 22 hereof, and the term ''supplemental register'' refers to the register provided for by sections 23 to 28 thereof.

The term ''person'' and any other word or term used to designate the applicant or other entitled to a beneﬁt or privilege or rendered liable under the provisions of this chapter includes a juristic person as well as a natural person. The term ''juristic person'' includes a ﬁrm, corporation, union, association, or other organization capable of suing and being sued in a court of law.

The terms ''applicant'' and ''registrant'' embrace the legal representatives, predecessors, successors and assigns of such applicant or registrant.

The term ''Commissioner'' means the Commissioner of Patents and Trademarks.

The term ''related company'' means any person whose use of a mark is controlled by the owner of the mark with respect to the nature and quality of the goods or services on or in connection with which the mark is used.

The term ''related company'' means any person who legitimately controls or is controlled by the registrant or applicant for registration in respect to the nature and quality of the goods or services in connection with which the mark is used.

The terms ''trade name'' and ''commercial name'' mean any name used by a person to identify his or her business or vocation.

The terms ''trade name'' and ''commercial name'' includes individual names and surnames, ﬁrm names and trade names used by manufacturers, industrialists, merchants, agriculturists, and others to identify then businesses, vocations, or occupations, the names or titles lawfully adopted and used by persons, ﬁrms, associations, corporations, companies, unions, and any manufacturing, industrial, commercial, agricultural, or other organizations engaged in trade or commerce and capable of suing and being sued in a court of law.

The term ''trademark'' includes any word, name, symbol, or device, or any combination thereof--

(1) used by a person, or

(2) which a person has a bona ﬁde intention to use in commerce and applies to register on the principal register established by this Act,

to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source or the goods, even if that source is unknown.

The term ''trademark'' includes any word, name, symbol, or device or any combination thereof adopted and used by a manufacturer or merchant to identify and distinguish his goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.

The term ''service mark'' means any word, name, symbol, or device, or any combination thereof--

(1) used by a person, or

(2) which a person has a bona ﬁde intention to use in commerce and applies to register on the principal register established by this Act,

to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown. Titles, character names, and other distinctive features of radio or television programs may be registered as service marks notwithstanding that they, or the programs, may advertise the goods of the sponsor.

The term ''service mark'' means a mark used in the sale or advertising of service to identify the services of one person and distinguish the services of others and to indicate the source of the services, even if that source is unknown. Titles, character names and other distinctive features of radio or television programs may be registered as service marks notwithstanding that they, or the programs, may advertise the goods of the sponsor.

The term ''certiﬁcation mark'' means any word, name, symbol, or device, or any combination thereof--

(1) used by a person other than its owner, or

(2) which its owner has a bona ﬁde intention to permit a person other than the owner to use in commerce and ﬁles an application to register on the principal register established by this Act,

to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person's goods or services or that the work or labor on the goods or services was performed by members of a union or other organization.

The term ''certiﬁcation mark'' means a mark used upon or in connection with the products or services of one or more persons other than the owner of the mark to certify regional or other origin, material, mode of manufacture, quality, accuracy or other characteristics of such goods or services or that the work or labor on the goods or services was performed by members of union or other organization.

The term ''collective mark'' means a trademark or service mark--

(1) used by the members or a cooperative, an association, or other collective group or organization, or

(2) which such cooperative, association, or other collective group or organization has a bona ﬁde intention to use in commerce and applies to register on the principal register established by this Act,

and includes marks indicating membership in a union, an association, or other organization.

The term ''collective mark'' means a trademark or service mark used by the members of a cooperative, ann association or other collective group or organization and includes marks used to indicate membership in a union, an association or other organization.

The term ''mark'' includes any trade--mark, service mark, collective mark, or certiﬁcation mark.

~~The term ''mark'' includes any trademark, service mark, collective mark, or certiﬁcation mark entitled to registration under this chapter whether registered or not.~~

The term ''use in commerce'' means the bona ﬁde use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this Act, a mark shall be deemed to be in use in commerce--

(1) on goods when--

(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels afﬁxed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and

(B) the goods are sold or transported in commerce, and

(2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.

A mark shall be deemed to be ''abandoned'' when either of the following occurs:

(1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for two consecutive years shall be prima facie evidence of abandonment. ''Use'' of a mark means the bona ﬁde use of that mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.

(2) When any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its signiﬁcance as a mark. Purchaser motivation shall not be a test for determining abandonment under this paragraph.

For the purposes of this Act a mark shall be deemed to be used in commerce (a) on goods when it is place in any manner on the goods or their containers or the displays associated therewith or on the tags or labels afﬁxed thereto and the goods are sold or transported in commerce and (b) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in this and a foreign country and the person rendering the services is engaged in commerce in connection therewith.

~~A mark shall be deemed to be ''abandoned''----~~

~~(a) When its use has been discontinued with intent not to resume. Intent not to resume may be inferred from circumstances. Nonuse for two consecutive years shall be prima facie abandonment.~~

(b) When any course of conduct of the registrant, including acts of omission as well as commission, cause the mark to lose its signiﬁcance as an indication of origin. Purchaser motivation shall not be a test for determining abandonment under this subparagraph.

The term ''dilution'' means the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of--

(1) competition between the owner of the famous mark and other parties, or

(2) likelihood of confusion, mistake, or deception.

The term ''colorable imitation'' includes any mark which so resembles a registered mark as to be likely to cause confusion or mistake or to deceive.

The term ''registered mark'' means a mark registered in the United States Patent and Trademark Ofﬁce under this chapter or under the Act of March 3, 1881, or the Act of February 20, 1905, or the Act of March 19, 1920. The phrase ''marks registered in the Patent and Trademark Ofﬁce'' means registered marks.

The term ''Act of March 3, 1881,'' ''Act of February 20, 1905,'' or ''Act of March 19, 1920,'' means the respective Act as amended.